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Acknowledgement This presentation was prepared with the help of David Nocilly, Adjunct Professor of Law at the College of Law.

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Disclaimer This material contained herein are provided for general information only. For specific advice concerning your invention or patent application, you are strongly urged to consult a patent lawyer.

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Provisional application Procedure –Cover sheet Names of the inventors Residences of each named inventor Title Correspondence address Government rights –Remain secret until a claim of priority –One year foreign filing clock under Paris Convention begins

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Non-provisional application Application that is examined by the USPTO Requirements –Specification, including at least one claim –Drawing in almost all cases –Oath/declaration –Applicable fee Small verses large entities

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Non-provisional application Priority –Claim priority to a provisional –Same effect as if filed on date of provisional Technical requirements –Must be filed within 12 months –Specific reference to provisional

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Elements of Application Title –Mandatory –Identify nature of the invention- A descriptive title –500 characters or less (short and specific)

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Elements of Application Cross-reference to Related Applications –Specification or application data sheet –Cite any prior patent applications and/or patents that bear on the present invention that you have been a party to.

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Elements of Application Field of the Invention –Paraphrasing of the manual of classification description Background of the Invention –Description of Related Art Description of the prior art and problems associated in the prior art Avoid discussion of present invention- any information in this section is treated as being an ADMISSION of what came before your invention, and therefore unpatentable to you

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Elements of Application Summary of the Invention –Should be commensurate with the invention as claimed –Restates the claims in “plain English” –How it solves problems previous prior art –Inventive concept and practices –How your invention provides some utilitarian result

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Elements of Application Detailed Description –Mandatory –Fulfill statutory disclosure requirements Written description of the invention –Demonstrate “possession” of an invention Enable one of ordinary skill how to make and use –Structure of a device –Steps for performing a method Best mode –Must specify figures by numbers and use references (numeral preferred) to refer to different parts of the figures

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Elements of Application Claims –Legal scope of the invention –Conclusion of the specification –Formal language and rules More than one allowed May use dependent claims Must recite the terms of the invention used in the rest of the specification

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Elements of Application Drawings –When necessary for understanding Nearly always! –May be required anyway –Need to include Every essential feature (what is claimed) Every claimed element –Do not need to include conventional features –Can show prior art